Case 2:17-cv-00513-JRG Document 258 Filed 01/04/19 Page 1 of 17 PageID #: 16443
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
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` Plaintiff,
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`v.
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`HUAWEI DEVICE USA INC., et al.,
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` Defendants.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
` Plaintiff,
`
`v.
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`APPLE INC.,
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` Defendant.
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`
`
`
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`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
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`
`
`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
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`
`
`DEFENDANT APPLE INC.’S OPPOSITION TO DKT. NO. 234, PLAINTIFF’S MOTION
`TO STRIKE THE EXPERT REPORT OF NEIL SIEGEL FOR FAILURE TO DISCLOSE
`OBVIOUSNESS COMBINATIONS BASED ON THE SIEGEL PATENTS
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`

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`Case 2:17-cv-00513-JRG Document 258 Filed 01/04/19 Page 2 of 17 PageID #: 16444
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`I.
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`II.
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`TABLE OF CONTENTS
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`Pages
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`INTRODUCTION ...............................................................................................................1
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`STATEMENT OF MATERIAL FACTS ............................................................................2
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`III.
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`RESPONSE TO AGIS’S FACTUAL BACKGROUND .....................................................3
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`IV.
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`LEGAL STANDARD ..........................................................................................................5
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`V.
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`ARGUMENT .......................................................................................................................5
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`A.
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`B.
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`Dr. Siegel’s Report Did Not Introduce Any Undisclosed Obviousness
`Combinations Based On The Siegel Patents. ...........................................................6
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`AGIS Does Not Establish That Any Relevant Factors Support Striking Dr.
`Siegel’s Report. ......................................................................................................11
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`VI.
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`CONCLUSION ..................................................................................................................12
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`i
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`Case 2:17-cv-00513-JRG Document 258 Filed 01/04/19 Page 3 of 17 PageID #: 16445
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`
`
`Cases
`
`TABLE OF AUTHORITIES
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`Pages
`
`Cardsoft, Inc. v. Verifone Holdings, Inc.,
`No. 2:08-cv-98-RSP (E.D. Tex. Jun. 3, 2012) .................................................................. 10
`
`DataQuill Ltd. v. Huawei Techs. Co. Ltd.,
`No. 2:13-CV-633, 2015 WL 9450821 (E.D. Tex. Jun. 11, 2015) .................................... 10
`
`Eolas Techs. Inc. v. Amazon.com, Inc.,
`No. 6:15-CV-01038, 2016 WL 7666160 (E.D. Tex. Dec. 5, 2016) ............................... 5, 6
`
`IP Innovation L.L.C. v. Red Hat, Inc.,
`No. 2:07-cv-447 (RRR), 2010 WL 9501469 (E.D. Tex. Oct. 13, 2010) ............................ 3
`
`LML Patent Corp. v. JPMorgan Chase & Co.,
`No. 2:08-CV-448, 2011 WL 5158285 (E.D. Tex. Aug. 11, 2011) ................................... 11
`
`Tyco Healthcare Grp. LP v. Applied Med. Res. Corp.,
`No. 9:06-CV-151, 2009 WL 5842062 (E.D. Tex. Mar. 30, 2009) ................................... 10
`
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`ii
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`Case 2:17-cv-00513-JRG Document 258 Filed 01/04/19 Page 4 of 17 PageID #: 16446
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`TABLE OF EXHIBITS
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`Exhibit Number
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`Description
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`Ex. 1
`Ex. 2
`Ex. 3
`Ex. 4
`Ex. 5
`Ex. 6
`Ex. 7
`Ex. 8
`Ex. 9
`Ex. 10
`Ex. 11
`Ex. 12
`Ex. 13
`Ex. 14
`Ex. 15
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`Apple’s Initial Invalidity Contentions (served December 1, 2017)
`Apple’s Amended Invalidity Contentions (served April 16, 2018)
`Apple’s Amended Invalidity Contentions Ex. B-14 (’055 Patent)
`Apple’s Amended Invalidity Contentions Ex. C-14 (’251 Patent)
`Apple’s Amended Invalidity Contentions Ex. D-14 (’838 Patent)
`Apple’s Amended Invalidity Contentions Ex. E-14 (’829 Patent)
`Apple’s Final Election of Prior Art References (served August 29, 2018)
`Siegel Invalidity Report Excerpts
`Siegel Deposition Excerpts
`Apple’s Initial Invalidity Contentions Ex. B-14 (’055 Patent)
`Apple’s Initial Invalidity Contentions Ex. C-14 (’251 Patent)
`Apple’s Initial Invalidity Contentions Ex. D-14 (’838 Patent)
`Apple’s Initial Invalidity Contentions Ex. E-14 (’829 Patent)
`Model Order Focusing Patent Claims and Prior Art (Judge Davis)
`Cardsoft, Inc. v. Verifone Holdings, Inc., No. 2:08-cv-98-RSP (E.D.
`Tex. Jun. 3, 2012), Dkt. No. 371
`
`iii
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`Defendant Apple Inc. (“Apple”) hereby opposes Dkt. No. 234, titled “Plaintiff AGIS
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`Software Development LLC’s Opposed Motion to Strike the Expert Report of Neil Siegel for
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`Failure to Disclose Obviousness Combinations Based on the Siegel Patents.”
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`I.
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`INTRODUCTION
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`AGIS moves to strike the entire invalidity report of Dr. Neil Siegel for a nonexistent alleged
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`deficiency. Dr. Siegel—a first-time litigation expert with decades of industry experience
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`engineering systems deployed by the U.S. military—prepared an expert report detailing his
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`opinions that the Force XXI Battle Command Brigade-and-Below system (“FBCB2,” also known
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`as “Blue Force Tracker” and “Appliqué”) he designed invalidates claims of four of the asserted
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`patents1 in this case. In his report, Dr. Siegel explains that the functionality of the FBCB2 system
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`is described in (among other things) four of his own patents (the “Siegel patents”) that resulted
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`from the development of the FBCB2 system and on which he is a named inventor.
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`AGIS’s motion relies on the false premise that Dr. Siegel advances an obviousness theory
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`based on a “combination” of the FBCB2 system and the Siegel patents. But Dr. Siegel does not
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`rely on any such combination to show invalidity, and Apple does not intend to present any such
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`“combination” theory at trial. To the contrary, Dr. Siegel explained in his report and at
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`deposition—and Apple has consistently maintained in its invalidity contentions—that the Siegel
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`patents describe the operation of the FBCB2 system, and it is the knowledge and use of that
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`FBCB2 system by others before the priority date of AGIS’s patents that renders AGIS’s claims
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`invalid. AGIS’s motion should be denied.
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`1 U.S. Patent Nos. 9,467,838 (the “’838 patent”), 9,445,251 (the “’251 patent”), 9,408,055 (the
`“’055 patent”), and 9,749,829 (the “’829 patent”).
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`II.
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`STATEMENT OF MATERIAL FACTS
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`Dr. Neil Siegel is an engineer and professor at the University of Southern California. (Ex.
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`8 ¶¶ 7-9.) Prior to joining USC in 2015, Dr. Siegel spent most of his career at defense contractor
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`Northrop Grumman (formerly TRW Inc.), where he worked on situational awareness,
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`communications, and command-and-control systems for the military and first responders. (Id.
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`¶¶ 10-12, 14.) From 1992 until 2004, Dr. Siegel led the development of FBCB2, a system for
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`communications and situational awareness on the battlefield that was created for and sold to the
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`U.S. Army. (Id. ¶¶ 51, 57-63.)
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`Apple identified the FBCB2 system as prior art in both initial and amended invalidity
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`contentions for four of the patents-in-suit: the ’838 patent, the ’251 patent, the ’055 patent, and
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`the ’829 patent. (Ex. 1 at 29; Ex. 2 at 30.) In charts accompanying the invalidity contentions,
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`Apple cited documents that describe features of the FBCB2 system, including the Siegel patents:
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`U.S. Patent Nos. 6,212,559 (the “’559 patent”); 5,672,840 (the “’840 patent”); 6,904,280 (the
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`“’280 patent”); and 7,278,023 (the “’023 patent”). (Ex. 3 at 2-3; Ex. 4 at 2-3; Ex. 5 at 2-3; Ex. 6
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`at 2-3.) Dr. Siegel is a named inventor of each of the Siegel patents. Apple elected the FBCB2
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`system in its Final Election of Prior Art as prior art that anticipates or renders obvious asserted
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`claims of each of the ’838, ’251, ’055, and ’829 patents. (Ex. 7 at 5-6, 8, 10, 12.)
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`Dr. Siegel provided an expert report explaining his opinion that each of the asserted claims
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`of the ’838, ’251, ’055, and ’829 patents is invalid as anticipated and obvious in view of the FBCB2
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`system. (See Ex. 8.) In his report, Dr. Siegel describes the features of the FBCB2 system that he
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`developed during his time at defense contractors TRW and Northrop Grumman and cites
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`supporting documents that show the system’s operation. (See, e.g., id. ¶¶ 89, 177, 281, 407.) The
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`supporting documents Dr. Siegel cites to describe the features and operation of the FBCB2 system
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`include the Siegel patents. (See, e.g., id. ¶¶ 70, 75, 83, 97, 154, 191.) Dr. Siegel explains in his
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`2
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`report that he and his team implemented the features described in the Siegel patents in the FBCB2
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`system. (See, e.g., id.)
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`III. RESPONSE TO AGIS’S FACTUAL BACKGROUND
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`Apple disagrees with AGIS’s factual background. (See Dkt. No. 234 at 1-3.) First, AGIS
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`mischaracterizes Apple’s invalidity contentions. AGIS insinuates that Apple failed to disclose the
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`Siegel patents in its invalidity contentions. (Id. at 1.) That is incorrect. When a prior art system
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`invalidates a patent claim, the party offering the prior system as evidence of invalidity may provide
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`a single chart with citations to multiple documents that describe the invalidating system. IP
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`Innovation L.L.C. v. Red Hat, Inc., No. 2:07-cv-447 (RRR), 2010 WL 9501469, at *4 (E.D. Tex.
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`Oct. 13, 2010) (“This court sees no error in using multiple references to describe a single prior art
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`system for the purpose of showing anticipation.”). Courts in this District have acknowledged that
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`common practice in a model order for counting prior art references. (See Ex. 14 at 1 n. 2 (“a prior
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`art instrumentality (such as a device or process) and associated references that describe that
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`instrumentality shall count as one reference”).) Apple followed that same approach here,
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`providing a single chart for each patent FBCB2 anticipates. (See Exs. 3-6.) Apple cited the Siegel
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`patents (among other documents) in its charts as evidence of the features and operation of that
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`system. (See, e.g., Ex. 3 at 1-3, 52-53, 78-80, 169 (citing the Siegel patents in FBCB2 charts for
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`the ’055 patent); Ex. 4 at 6-18, 76, 113 (same for the ’251 patent); Ex. 5 at 7-19, 109, 137-139
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`(same for the ’838 patent); Ex. 6 at 7-19, 97-99, 105-107, 127-130, 134-137 (same for the ’829
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`patent).) Apple did not create separate charts for the Siegel patents because the Siegel patents
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`describe the FBCB2 system, and are not asserted as separate prior art references.
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`Second, AGIS mischaracterizes Apple’s final election of prior art. AGIS incorrectly claims
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`that Apple’s election did not encompass the Siegel patents because Apple did not elect the FBCB2
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`system in combination with the Siegel patents. (See Dkt. No. 234 at 2-3.) Apple did not do so
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`3
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`because Apple did not assert the Siegel patents as independent references in an anticipation ground
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`or an obviousness combination, and neither Apple nor Dr. Siegel assert the Siegel patents as such
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`standalone references now. Apple did elect the FBCB2 system as prior art in both anticipation
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`and obviousness grounds. (Ex. 7 at 5-6, 8, 10, 12.) Apple was not required to make a separate
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`reference to the Siegel patents in its election because its invalidity contentions are based on the
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`FBCB2 system, which is described in the Siegel patents, among other documents. (Ex. 14 (E.D.
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`Tex. Model Order) at 1, n. 2.) Apple’s election did explicitly reference its invalidity contention
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`charts that cite the Siegel patents, as well as the additional evidence of record, as supporting
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`documentation for the elected FBCB2 system. (Ex. 7 at 5-6, 8, 10, 12.)
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`Third, AGIS mischaracterizes Dr. Siegel’s report. AGIS incorrectly states that Dr. Siegel’s
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`report “included obviousness arguments based on the FBCB2 system in combination with the
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`Siegel Patents.” (Dkt. No. 234 at 2.) Dr. Siegel’s report included only (1) opinions of anticipation
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`based on the FBCB2 system and (2) opinions of obviousness based on the FBCB2 system and the
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`knowledge of a person of ordinary skill in the art. (See Ex. 8 at Sections VIII-XI.) Dr. Siegel cited
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`the Siegel patents in his report as supporting documentation describing the functionality of the
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`FBCB2 system, consistent with Apple’s invalidity contentions. (See, e.g., id. ¶¶ 70, 75, 83.) Dr.
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`Siegel stated that the features he references in the Siegel patents were implemented in the FBCB2
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`system that provides the basis for his opinions. He unambiguously reiterates that point in every
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`one of the many paragraphs of his report that AGIS now cites as purported “obviousness
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`arguments.” (Id. ¶ 83 (explaining features of the Siegel patents “were implemented as part of
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`FBCB2 in the 1990’s”); see also id. ¶¶ 17, 97-98, 119, 154, 161-162, 186-187, 191, 194, 216, 222-
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`223, 227, 230, 237-238, 244, 250, 267-268, 274, 280, 303, 324, 345, 350, 376, 404, 415-416, 431,
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`437, 467-468, 485.)
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`4
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`Fourth, AGIS mischaracterizes Dr. Siegel’s deposition testimony. Dr. Siegel did not
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`testify that he plans to present “an obviousness combination based on the FBCB2 system in
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`combination with the Siegel Patents” at trial, as AGIS now argues. (See Dkt. No. 234 at 3.) Dr.
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`Siegel instead confirmed that the Siegel patents were “part of [his] anticipation and obviousness
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`analysis” for various claims in AGIS’s patents. (See Ex. 9 at 62:25-79:24.) As explained above,
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`the Siegel patents are indeed a part of Dr. Siegel’s anticipation and obviousness analysis, providing
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`corroboration and support for his opinions regarding the FBCB2 system. (See Ex. 8 at Sections
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`VIII-XI.) Consistent with that analysis, Dr. Siegel confirmed at his deposition that the Siegel
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`patents are not separate references in an obviousness combination; they are supporting evidence
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`of the FBCB2 system’s features. (See Ex. 9 at 216:2-220:3 (“I would say that my description of
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`FBCB2 in and of itself demonstrates anticipation, and that that is reinforced by the documents that
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`I cite, including the [Siegel] patent, but including the other documents.”).)
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`IV.
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`LEGAL STANDARD
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`Invalidity contentions must contain “[t]he identity of each item of prior art that allegedly
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`anticipates each asserted claim or renders it obvious” and charts that identify “where specifically
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`in each alleged item of prior art each element of each asserted claim is found.” P.R. 3-3. The
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`purpose of contentions is to “provide all parties with adequate notice and information with which
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`to litigate their cases.” Eolas Techs. Inc. v. Amazon.com, Inc., No. 6:15-CV-01038, 2016 WL
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`7666160, at *1 (E.D. Tex. Dec. 5, 2016).
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`V.
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`ARGUMENT
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`Dr. Siegel’s report does not advance previously-undisclosed invalidity theories based on
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`new obviousness combinations. AGIS had full notice of the FBCB2 system-based invalidity
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`opinions expressed in his report. AGIS ignores that reality, hinging its argument on a false
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`characterization of Dr. Siegel’s references to the Siegel patents throughout his report. Dr. Siegel
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`did not deploy the Siegel patents in his report any differently than how the Siegel patents were
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`cited in Apple’s previous invalidity contentions. Instead, as Dr. Siegel repeatedly states
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`throughout his report, the Siegel patents, along with other contemporaneous documentation,
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`illustrate features that he and his team implemented in the FBCB2 system.
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`A.
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`Dr. Siegel’s Report Did Not Introduce Any Undisclosed Obviousness
`Combinations Based On The Siegel Patents.
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`Dr. Siegel’s report does not present new invalidity theories. Apple identified the FBCB2
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`system as a prior art system that anticipates and renders obvious claims of AGIS’s asserted patents
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`in its invalidity contentions as early as December 2017, providing charts showing how the FBCB2
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`system met the limitations of the asserted claims. (Ex. 1 at 29; Ex. 10 at 1; Ex. 11 at 1; Ex. 12 at
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`1; Ex. 13 at 1.) Apple again identified the FBCB2 system as prior art that anticipates and renders
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`obvious AGIS’s claims in its amended invalidity contentions in April 2018, providing charts for
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`the FBCB2 system that included citations to the Siegel patents as supporting evidence for
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`functionality of the system relevant to certain claim limitations. (Ex. 2 at 30; Ex. 3 at 2-3; Ex. 4
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`at 2-3; Ex. 5 at 2-3; Ex. 6 at 2-3.) Those same grounds—anticipation and obviousness in view of
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`the FBCB2 system—were presented by Dr. Siegel in his expert report. (See Ex. 8 at Sections
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`VIII-XI.) Neither Apple nor Dr. Siegel have advanced obviousness positions based on a
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`combination of FBCB2 with the Siegel patents. Thus, as early as December 2017, Apple provided
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`AGIS with “notice and information with which to litigate [its] case[]” regarding the opinions later
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`expressed in Dr. Siegel’s report, in compliance with the Court’s rules. See Eolas Techs., 2016 WL
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`7666160, at *1.
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`The Siegel patents describe implemented features of the FBCB2 system itself; they are not
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`separate prior art that needs to be combined with the FBCB2 system. Dr. Siegel explained a variety
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`of different features of the FBCB2 system in his overview of the system. (See Ex. 8 ¶¶ 56-84.)
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`6
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`For some of the FBCB2 system’s functionality, Dr. Siegel cited to the Siegel patents, explaining
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`that he and his team implemented certain aspects of the Siegel patents into the system they
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`developed. (See, e.g., id. ¶¶ 70, 75-76, 83.) Dr. Siegel made clear that he was not relying on the
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`Siegel patents as separate prior art, but rather as supporting documentation of “features [that] were
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`implemented as part of FBCB2.” (See id. ¶ 83.)
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`As an example, Dr. Siegel cites to the Siegel patents when discussing claim limitations
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`generally relating to setting up and joining groups. (See, e.g., id. ¶¶ 118, 119 (citing Dr. Siegel’s
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`’559 patent when describing how the FBCB2 system meets the limitations of claim 5 of AGIS’s
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`’838 patent).) Dr. Siegel explains relevant functionality of the FBCB2 system and describes how
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`that functionality matches AGIS’s claim. (Id. ¶ 118.) Dr. Siegel then cites to his ’559 patent in
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`providing additional detail on the FBCB2 system—not as a separate reference—and explains that
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`his team “developed this patent as part of [their] work on FBCB2” and that they “incorporated
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`many of the capabilities outlined in the patent in FBCB2.” (Id. ¶ 119.)
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`As another example, Dr. Siegel cites to the Siegel patents when discussing claim limitations
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`generally relating to updating location information for devices. (See, e.g., id. ¶ 191 (citing Dr.
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`Siegel’s ’840 patent when describing how the FBCB2 system meets the limitations of claim 1 of
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`AGIS’s ’829 patent).) Dr. Siegel again explains the relevant functionality of the FBCB2 system
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`and describes how that functionality matches AGIS’s claim, citing his ’840 patent along with other
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`documents. (Id.) Dr. Siegel explains that he and his team implemented the features in the ’840
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`patent, including a reporting filter discussed in the patent, and that his team “extended that concept
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`of a filter for reporting based on angular threshold to one of a threshold based on time and motion”
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`in FBCB2. (Id.) AGIS dismisses the ’840 patent as related to a “non-FBCB2” system called
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`“FAAD C2I.” (Dkt. No. 234 at 2.) But as Dr. Siegel explained, the FAAD C2I system that he and
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`his team developed was a “pathfinder system for FBCB2,” and the development of FAAD C2I
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`dovetailed into his group’s work on FBCB2, including the features patented in the ’840 patent that
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`were incorporated into FBCB2. (Ex. 8 ¶¶ 57-63, 191.)
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`AGIS injects undisclosed theories into Dr. Seigel’s report by ignoring his references to the
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`Siegel patents as showing features of the FBCB2 system itself. None of AGIS’s citations to the
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`report supports the position that Dr. Siegel “departs from Apple’s representations and presented
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`new combinations based on the FBCB2 system and the Siegel Patents.” (Dkt. No. 234 at 4-5.)
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`Instead, in every instance, Dr. Siegel references features of the Siegel patents and states that the
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`“features were implemented as part of FBCB2 in the 1990’s” or similarly indicates that the
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`functionality in the Siegel patents was actually implemented in the FBCB2 system. (See Ex. 8 ¶¶
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`17, 83, 97-98, 119, 154, 161-162, 186-187, 191, 194, 216, 222-223, 227, 230, 237-238, 244, 250,
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`267-268, 274, 280, 303, 324, 345, 350, 376, 404, 415-416, 431, 437, 467-468, and 485.)
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`AGIS likewise mischaracterizes Dr. Siegel’s deposition testimony, cherry picking two
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`series of questions that appear to have been posed for no apparent purpose other than to
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`manufacture a basis for AGIS’s instant motion. In the first series, AGIS’s counsel directed Dr.
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`Siegel to a number of paragraphs in his report that reference the Siegel patents. (Ex. 9 at 62:25-
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`79:24.) For each paragraph, AGIS’s counsel pointed to the referenced Siegel patent and asked Dr.
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`Siegel to confirm “that’s part of [his] analysis of this claim limitation” and that he “considered that
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`[Siegel] patent as part of [his] anticipation and obviousness analysis.” (See, e.g., Ex. 9 at 64:10-
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`19.) In each case, Dr. Siegel confirmed that the referenced Siegel patent was included in his
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`analysis. (Id. (“It’s part of it, yeah.”).) That testimony is nothing new to AGIS; the Siegel patents
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`have been a part of Apple’s contentions and analysis regarding the FBCB2 system since at least
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`April 2018. (See Exs. 3-6.)
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`8
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`The second set of questions reveals only AGIS’s attempts to mischaracterize the testimony
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`of Dr. Siegel, who is not an attorney, to create a basis for the present motion. In that series, AGIS’s
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`counsel latched onto Dr. Siegel’s stated confusion with counsel’s use of the word “combination”
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`to press the theme that Dr. Siegel’s opinions were based on obviousness combinations of the
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`FBCB2 system and “other documents.” (See, e.g., id. at 217:19-218:20.) But Dr. Siegel never
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`testified that his opinions are based on obviousness combinations of the FBCB2 system with the
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`Siegel patents. (See id. at 210:3-220:3.)
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`AGIS first pressed Dr. Siegel regarding invalidity law, and Dr. Siegel indicated it is the
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`capabilities of FBCB2 system—not obviousness combinations—that support his opinions. (Id. at
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`210:3-213:1 (“But most of my analysis I’m talking about capabilities of FBCB2 that I believe
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`anticipate under 102 (a) and 102 (b).”).) Unsatisfied with that answer, AGIS’s counsel attempted
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`to separate the FBCB2 system from the documents that describe the system’s functionality. (Id.
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`at 213:3-17 (“I’m not asking you about the FBCB2 system specifically, I’m only asking you about
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`documents you’ve looked at.”)) But again Dr. Siegel indicated that counsel’s question was
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`nonsensical because the documents cited in his report, including the Siegel patents, show features
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`of the FBCB2 system and are not separate references. (Id. (“I used my knowledge and expertise
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`in FBCB2, and in some instances I also cited documents that confirm what I described from my
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`own experience and expertise.”).) AGIS’s counsel then tried again to inject an obviousness
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`combination into Dr. Siegel’s opinions, pressing on whether Dr. Siegel used “a description of the
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`FBCB2 system in combination with [his] description of this [Siegel] patent.” (See id. at 217:13-
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`219:1.) Dr. Siegel responded, referring to his “non-attorney’s mind” and his “non-lawyer’s way”
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`and explaining that he describes FBCB2 and how it demonstrates invalidity “and that that is
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`reinforced by the documents that [he] cite[s],” including the Siegel patents. (Id.) When AGIS’s
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`counsel pressed one more time about the “FBCB2 system in combination with any of the additional
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`patents or printed publications,” Dr. Siegel stated he was “not quite sure what [counsel] mean[t]
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`by ‘combination’” but that in the plain meaning he was using, he agreed. (Id.) Dr. Siegel never
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`stated anywhere in that series of twists that he uses the Siegel patents as standalone references in
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`obviousness combinations with the FBCB2 system. Instead, he stated that where he was opining
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`about obviousness in his report, he stated he was doing so. (Id. 219:1-220:3.)
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`AGIS provides no support for the notion that such a line of questioning—quite clearly
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`aimed to confuse a non-attorney expert—warrants striking an expert report. Instead, the three
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`cases AGIS cites merely highlight the circumstances that might actually warrant striking a report,
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`and the lack of any such circumstances in this case. See Tyco Healthcare Grp. LP v. Applied Med.
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`Res. Corp., No. 9:06-CV-151, 2009 WL 5842062, at *3 (E.D. Tex. Mar. 30, 2009) (striking expert
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`report where defendant admitted that prior art combinations at issue were asserted against certain
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`asserted claims for the first time in defendant’s expert report); DataQuill Ltd. v. Huawei Techs.
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`Co. Ltd., No. 2:13-CV-633, 2015 WL 9450821, at *3 (E.D. Tex. Jun. 11, 2015) (excluding expert
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`report where defendant disclosed prior art in its invalidity contentions but changed the alleged
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`priority date of that prior art for the first time in the expert’s report); Cardsoft, Inc. v. Verifone
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`Holdings, Inc., No. 2:08-cv-98-RSP, Dkt. No. 371 at 1 (E.D. Tex. Jun. 3, 2012) (striking a
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`supplemental expert report that purported to reply to new noninfringement positions and indicating
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`that such new, undisclosed positions would not be allowed at trial) (attached as Ex. 15). None of
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`those bases exists here, and AGIS’s motion should be denied.
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`B.
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`AGIS Does Not Establish That Any Relevant Factors Support Striking Dr.
`Siegel’s Report.
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`AGIS acknowledges five factors considered in this District for striking an expert report,
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`but fails to establish that any of those factors supports striking Dr. Siegel’s report.2 (See Dkt. No.
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`234 at 4, 6.) Three of the five factors considered when striking an expert report (length and reason
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`for delay, diligence in seeking an extension) assume that the party did not disclose its invalidity
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`theories as required under the Local Patent Rules, but—aside from its manufactured argument
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`regarding new obviousness combinations—AGIS has not identified any legitimate delay or
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`deficiency in Apple’s disclosures. As explained above, Apple has not disclosed any new theories
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`in Dr. Siegel’s expert reports, and the Siegel patents that are purportedly the basis of this motion
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`were charted in invalidity contentions as early as April 2018. With regard to the remaining two
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`factors (prejudice to the non-movant and availability of a lesser sanction), AGIS ignores the
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`significant prejudice its motion would cause Apple. AGIS’s claim that its requested relief “would
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`return Apple to the same position it held when Apple served its final election of prior art” (Dkt.
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`No. 234 at 6) is disingenuous: AGIS’s requested relief seeks to eliminate any expert testimony
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`concerning the FBCB2 system. Because Apple’s theory of invalidity based on the FBCB2 system
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`has remained consistent throughout the case, that relief is not remotely warranted.
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`2 See LML Patent Corp. v. JPMorgan Chase & Co., No. 2:08-CV-448, 2011 WL 5158285, at *4
`(E.D. Tex. Aug. 11, 2011) (“When determining whether to exclude evidence based on a party’s
`failure to comply with the Patent Rules, a non-exclusive list of factors considered by the courts
`includes: (1) The danger of unfair prejudice to the non-movant; (2) The length of the delay and its
`potential impact on judicial proceedings; (3) The reason for the delay, including whether it was
`within the reasonable control of the movant; (4) The importance of the particular matter, and if
`vital to the case, whether a lesser sanction would adequately address the other factors to be
`considered and also deter future violations of the court’s Scheduling Orders, Local Rules, and the
`Federal Rules of Civil Procedure; and (5) Whether the offending party was diligent in seeking an
`extension of time, or in supplementing discovery, after an alleged need to disclose the new matter
`became apparent.”)
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`VI. CONCLUSION
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`For the foregoing reasons, Apple respectfully requests that the Court deny AGIS’s Motion.
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`Dated: January 4, 2019
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`By: Respectfully submitted:
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`/s/ Melissa R. Smith
`Melissa Richards Smith
`State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Ave.
`Marshall, TX 75670
`Tel: (903) 934-8450
`Fax: (903) 934-9257
`melissa@gillamsmithlaw.com
`
`John M. Desmarais
`Paul A. Bondor
`Ameet A. Modi
`Cosmin Maier
`Kerri-Ann Limbeek
`Brian Matty
`Tom BenGera
`Kathryn Bi
`Francesco Silletta
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`Email: jdesmarais@desmaraisllp.com
`Email: pbondor@desmaraisllp.com
`Email: amodi@desmaraisllp.com
`Email: cmaier@desmaraisllp.com
`Email: klimbeek@desmaraisllp.com
`Email: bmatty@desmaraisllp.com
`Email: tbengera@desmaraisllp.com
`Email: kbi@desmaraisllp.com
`Email: fsilletta@desmaraisllp.com
`
`ATTORNEYS FOR DEFENDANT
`APPLE INC.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that counsel of record who are deemed to have consented
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`to electronic services are being served with a copy of this document via the Court’s CM/ECF
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`system per Local Rule CV-5(a)(3) on this the 4th day of January, 2019.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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